Intellectual Property

In the not too distant future when a part breaks on your car or your dishwasher, for example, you will be able to turn to a 3-D printer to create a duplicate part immediately rather than going to the dealership or waiting for the repair man.

Three dimensional printing, more formally known as additive manufacturing—the process of making a three-dimensional solid object from a digital file by layering material—offers a lot promise for consumers, but it also poses a host of problems for the holders of intellectual property—such as patents, copyrights and trademarks—on those items.

“It is a growing concern for our clients,” says Geoffrey Oberhaus, a patent attorney for Dinsmore & Shohl. “If you are an automotive original equipment maker and all of a sudden people can make a print of a broken or replacement part, it poses two problems. First, it is something you’ve put a lot of work into designing and creating. Secondly, there’s a liability issue. What happens when it doesn’t really work well?”

The holder of the patent or copyright on the duplicated part may not ultimately be held liable for the failure of a part made by a 3-D printer, but still faces the legal expense, and possibly bad publicity, of litigation, he says.

Martin J. Miller, a patent attorney with Porter Wright, also sees choppy water ahead where intellectual property protection clashes with the increasing availability of 3-D printing.

In one high-profile recent instance, Katy Perry’s Left Shark was ensnared in copyright claims after this year’s Super Bowl halftime show.

The Left Shark, the backup dancer who earned Internet fame with some faulty footwork, inspired a maker of 3-D printed figures to market a Left Shark figure online. The manufacturer was immediately accused by Perry’s lawyers of violating her copyright on the shark costume.

“You’re going to see more situations like the Left Shark for sure,” says Miller.

People who create their own costumes or models, or music evocative of copyrighted materials are always a challenge for owners of the copyrights, says Thomas Humphrey, an attorney with the IP law firm of Wood Herron & Evans.

“For the most part, they’re not an economic threat,” he says.

“But that whole calculus of what is threatening has changed with 3-D printing,” Humphrey says. “It won’t be long before everyone will have one. When you want to have an action figure from the latest movie, you won’t necessarily go to Wal-Mart to find it. You could fire up a 3-D printer and download a digital figure from a website and print it in your house. The quality is exactly same as if you went to the store and bought it and it has the same collector value.”

Miller says, “In the past you would have had to spend thousands of dollars on injection molding, for example. Nobody would do that, but now it’s very simple to make copies and sell them online.”

The technology also makes it harder to deal with someone who makes a copy for their own use in their home. “How do you deal with that?” Miller says.

With the decreased barriers to market entry and the ease of copying using 3-D printing technology, there is an increased need to obtain patent protection, not only for the complete product, but also for component parts in some instances, Miller says.

In the 1984 so-called “Betamax case” involving Sony Corp of America and Universal City Studios, the Supreme Court ruled that making individual copies of TV shows to view later didn’t constitute copyright infringement. The court established a general test for determining whether a copying device violated copyright. But that’s led to some different interpretations by courts when applied to today’s computer file-sharing technology.

Karen Gaunt, a copyright and trademark attorney at Dinsmore & Shohl, says there is sufficient protection in copyright law to protect creators of artistic works from someone copying their work with a 3-D printer.

“Copyright law has been around forever and file sharing and music sharing have revitalized it. In my opinion, it’s proven to be a very flexible legal doctrine that protects expression and people’s creative artistic effort,” she says.

Copyright protects artistic expression such as sculpture, painting and other artworks, and also computer software, blueprints and technical drawings.

A trademark by definition is the obvious name of brand, a logo or the look of a product, or its color scheme.

There are two types of patents, Dinsmore’s Oberhaus points out. A utility patent is what most people think of when they think about patents. It protects an apparatus or a process created by the patent holder. A design patent, on the other hand, protects the ornamental look of an item, not how it functions. Copyright and design patents share a lot of similarities.

In more and more cases, Oberhaus says, consumer product companies are pursuing a portfolio of intellectual property protections, filing for utility and design patents, copyright and trademarks on their products.

Technology changes are forcing companies to expand their vision of how to protect their products, says Oberhaus. “In the past you might have thought about a utility patent and not a design patent, or just pursued copyright registration,” he says. “It’s really about using the whole portfolio of intellectual property protection. You don’t know today what you’re going to need to leverage in 10 years. You put the fence posts up now, because you don’t know what the issues will be.”

He expects an increase in design patent filings as companies try to protect both the function of their product and its look from 3-D printing copycats.

“In terms of protection, with a few exceptions, you can have a trademark, copyright and design patent all on aspects of the same thing, and enforce those rights separately depending on what the infringement is and what’s happening,” says Gaunt.

Another approach companies are taking to protect themselves from 3-D printed copies is to install computer chips or other technology into their product to make it harder to duplicate.

“If you can’t duplicate the chip, you can print a duplicate but it won’t work the same,” Oberhaus says.

In the long run, Gaunt says, the best defense for consumer products makers may be a good offense.

She points out the music and movie industry initially pursued a strategy of suing anyone who copied their material.

“Those were a success from legal standpoint, but it was a public relations disaster,” she says. “They finally realized that instead of fighting technology and where everybody was going, they better get on board with their own services that people could license and pay a subscription to access.”

She says businesses may ultimately find it easier to view 3-D printing not as a competitive threat but as a new marketing channel and offer digital files of their products for consumers to purchase and copy.

The increasing availability of 3-D printing technology, Oberhaus says, will undoubtedly give rise to more retail locations where consumers can, for a fee, scan and duplicate an item.

That’s likely to eventually lead to a legal case “where something is scanned and maybe it isn’t copyrighted, and there’s no design patent in place and it’s not a brand protected by trademark,” he says. “It will raise legal questions of what is copyright-able and whether what is protected under copyright is expanded [by the courts] or narrowed.”